IN RE PET PASSION COMERCIO DE PRODUTOS, 77635535 (TTAB 2-7-2011)
Serial No. 77635535United States Patent and Trademark OfficeTrademark Trial and Appeal Board
Mailed: February 7, 2011Page 1
THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B.
Arturo P?rez-Guerrero for Pet Passion Comercio de Produtos Para Animais LTDA.
Nelson B. Snyder III, Trademark Examining Attorney, Law Office 107 (J. Leslie Bishop, Managing Attorney).
Before Walters, Grendel and Lykos, Administrative Trademark Judges.
Opinion by Grendel, Administrative Trademark Judge:
Pet Passion Comercio de Produtos Para Animais LTDA (applicant) seeks registration on the Principal Register of the mark depicted below for goods identified in the application as “perfumes, shampoos and conditioners for pets.”[fn1]Page 2
Applicant has disclaimed the exclusive right to use the word PET apart from the mark as shown.
The Trademark Examining Attorney has issued a final refusal to register applicant’s mark on the ground that applicant’s mark, as applied to the goods identified in the application, so resembles the mark depicted below, previously-registered on the Principal Register (with a disclaimer of PET) for services identified in the registration as “retail and wholesale pet products store services,”[fn2] as to be likely to cause confusion, to cause mistake, or to deceive. Trademark Act Section 2(d), 15 U.S.C. ? 1052(d).Page 3
Applicant has appealed the final refusal. Applicant and the Trademark Examining Attorney have filed briefs on appeal.
After careful consideration of all of the evidence of record and the arguments of counsel, we affirm the refusal to register.
Initially, we sustain the Trademark Examining Attorney’s objection (stated in his brief) to the evidence applicant submitted for the first time with its appeal brief. This evidence is untimely and shall be given no consideration. Trademark Rule 2.142(d), 37 C.F.R. ? 2.142(d). (We add that our decision in this case would have been the same even if we were to have considered this untimely evidence.)
Our likelihood of confusion determination under Section 2(d) is based on an analysis of all of the facts in evidence that are relevant to the factors bearing on the likelihood of confusion issue (the du Pont factors). See In re E. I. duPont de Nemours Co., 476 F.2d 1357,Page 4
177 USPQ 563 (CCPA 1973). See also Palm Bay Imports, Inc.v. Veuve Clicquot Ponsardin Maison Fondee En 1772,396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005).
“In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods and/or services.” In re MaxCapital Group Ltd., 93 USPQ2d 1243, 1244 (TTAB 2010). “While it must consider each factor for which it has evidence, the Board may focus its analysis on dispositive factors, such as similarity of the marks and relatedness of the goods [and/or services].” Han Beauty Inc. v. Alberto-Culver Co.,236 F.3d 1333, 57 USPQ2d 1557, 1559 (Fed. Cir. 2001). See alsoFederated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1357, 192 USPQ 24 (CCPA 1976).
Under the first du Pont factor, we determine the similarity or dissimilarity of applicant’s mark and the cited registered mark when they are viewed in their entireties in terms of appearance, sound, connotation and commercial impression.
The test, under the first du Pont factor, is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression that confusion as to the source of the goodsPage 5
and/or services offered under the respective marks is likely to result. The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. See In re Mucky DuckMustard Co. Inc., 6 USPQ2d 1467, 1468 (TTAB 1988);Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975).
Additionally, although the marks at issue must be considered in their entireties, it is well-settled that one feature of a mark may be found to be more significant than another in terms of the mark’s function as a source-indicator, and it is not improper to give more weight to this dominant feature in determining the commercial impression created by the mark, and in comparing the marks at issue under the first duPont factor. See In re Chatam International Inc.,380 F.3d 1340, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004); In reNational Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
Keeping these general principles in mind, we make the following findings under the first du Pont factor.
First, we find that, as to both applicant’s mark and the cited registered mark, it is the wording PET PASSION that dominates the commercial impression of both marks in terms of their significance and function as indications ofPage 6
source. In both marks, the words PET PASSION appear in large and prominent lettering. The combination of the words PET and PASSION into PET PASSION creates an obvious and memorable alliterative composite phrase.[fn3] The other wording in the cited registered mark, FOR THE PET WHO OWNS SPECIAL PEOPLE, appears in much smaller lettering than does PET PASSION. Moreover, we find that it is a mere secondary tag-line to the primary and dominant source-indicator in the mark, which is the phrase PET PASSION.[fn4] The design element of applicant’s mark, i.e., the simple drawing of a dog and a cat, contributes relatively less to the source-indicating significance of the mark, which is for pet products. The background double-P design element of the cited registered mark, to the extent that it contributes anything to the commercial impression of the mark, merely reinforces the alliterative effect of the dominant phrase PET PASSION.Page 7
In short, we find that in both applicant’s mark and the cited registered mark, it is the phrase PET PASSION that purchasers primarily will use as, and later recall to be, the indication of source for applicant’s goods and the registrant’s services. For these reasons, we find that PET PASSION dominates each of the marks, and although we consider the marks in their entireties, we shall accord more weight to this dominant feature of the two marks in our comparison of the marks under the first du Pont factor.
Comparing the marks in their entireties, we find that they obviously are identical to the extent that they both include the alliterative phrase PET PASSION as their dominant features. The marks are dissimilar to the extent that applicant’s mark includes the design element of a drawing of a dog and a cat and a heart, to the extent that the cited registered mark includes a double-P background design, and to the extent that the cited registered mark includes the additional tag-line FOR THE PET WHO OWNS SPECIAL PEOPLE.
In terms of appearance, we find that the dissimilarities between the marks are outweighed by the basic overriding similarity between the marks which results from the presence in both marks of the dominant phrase PET PASSION, and especially the manner in which PET PASSION isPage 8
positioned so prominently and depicted in such large letters in both marks.
In terms of sound, we find that the dissimilarity between the marks which arises from the additional wording in the cited registered mark is outweighed by the basic similarity between the marks which arises from the presence of the dominant words PET PASSION in both marks. These words are the first words to be pronounced in the cited registered mark, and the only words to be pronounced in applicant’s mark. They create the same alliterative effect in both marks.
In terms of connotation, we find that the similarity between the marks which arises from the presence in both marks of the phrase PET PASSION, which would mean exactly the same thing in both marks, outweighs the dissimilarity between the marks which arises from the additional wording in the cited registered mark, i.e., FOR THE PET WHO OWNS SPECIAL PEOPLE. The meaning of this tag-line merely amplifies and complements the meaning of the dominant phrase PET PASSION, further suggesting the “passionate” relationship between pets and their owners.
In terms of commercial impression, we find that the marks are similar when considered in their entireties. They share the dominant phrase PET PASSION, which createsPage 9
the same commercial impression when applied to both pet supplies like applicant’s and pet store services like the registrant’s. Both marks create the impression that the respective goods and services both are for devoted pet owners and their pets. The other elements in the respective marks, i.e., the drawing of the dog and cat and the heart in applicant’s mark and the additional tag-line in the cited registered mark, serve merely to reinforce this basic commercial impression.
When we compare applicant’s mark and the cited registered mark in their entireties, the marks certainly can be distinguished in several respects when they are compared side-by-side. However, as noted above, that is not the test under the firstdu Pont factor. We find that the average purchaser who encounters one of the marks and then later encounters the other mark is likely, given the fallibility of memory over a period of time, to think that the second mark is the same mark he or she had seen before. And even if the purchaser recognizes that there are some differences between the two marks, he or she is likely to assume, based on the presence in both marks of the identical dominant phrase PET PASSION, that the second mark is simply a slightly varied version of the first, with both serving to indicate origin in the same or a related source.Page 10
For all of these reasons, we find that applicant’s mark and the cited registered mark, when considered in their entireties in terms of appearance, sound, connotation and commercial impression, are similar. We find that this similarity of the marks under the first du Pont factor supports a conclusion that confusion is likely.
The second du Pont factor requires us to determine the similarity or dissimilarity of the goods and/or services as they are identified in the application and in the cited registration, respectively. Applicant’s goods are identified in the application as “perfumes, shampoos and conditioners for pets.” The services identified in the cited registration are “retail and wholesale pet products store services.”
It is settled that retail store services and the goods which may be sold in such stores are related goods and services for purposes of determining likelihood of confusion under the second du Pont factor. See In re Thomas, 79 USPQ2d 1021 (TTAB 2006); In re Peebles Inc., 23 USPQ2d 1795 (TTAB 1992).
Furthermore in this case, the Trademark Examining Attorney has made of record six third-party use-based registrations which include in their identifications of goods and services both the goods identified in applicant’sPage 11
application and the services identified in the cited registration. These registrations are probative evidence to the extent that they suggest that the respective goods and services are of a kind which could be marketed by a single source under a single mark. See In re Albert Trostel SonsCo., 29 USPQ2d 1783 (TTAB 1993); In re Mucky DuckMustard Co. Inc., supra, 6 USPQ2d 1467, 1470 n. 6.
Additionally in this case, the Trademark Examining Attorney has made of record printouts of web pages from the website of a third-party pet supplies retailer (www.drsfostersmith.com) which show that this retailer markets both its retail store services and various pet supplies and products under a single mark.
Based on this evidence, we find that applicant’s goods as identified in the application and the services identified in the cited registration are sufficiently related that confusion would be likely to result if they were to be marketed under the confusingly similar marks involved in this case. We find that this relatedness of applicant’s goods and the registrant’s services, under the second du Pont factor, supports a conclusion that confusion is likely.
We find, under the third du Pont factor (comparison of trade channels), that the normal trade channels forPage 12
applicant’s pet products and for the registrant’s retail pet store services are overlapping. Indeed, a retail pet store would be a normal trade channel for pet products like applicant’s. This similarity of trade channels, under the thirddu Pont factor, supports a conclusion that confusion is likely.
We find, under the fourth du Pont factor (conditions of purchase), that the purchasers of pet products and of retail pet store services are the same and overlapping, and would include ordinary consumers. The goods at issue would include ordinary, inexpensive consumer items which would be purchased with no more than a normal degree of care. These conditions of purchase, under the fourth du Pont factor, support a conclusion that confusion is likely.
Considering all of the evidence of record as it pertains to the relevant du Pont factors, and for all of the reasons discussed above, we conclude that a likelihood of confusion exists. We have considered all of applicant’s arguments to the contrary (including any arguments not specifically discussed in this opinion), but we are not persuaded by them. To the extent that any doubts might exist as to the correctness of our conclusion that confusion is likely, we resolve such doubts against applicant. See In re Shell Oil Co.,992 F.2d 1204,Page 13
26 USPQ2d 1687 (Fed. Cir. 1993); In re Hyper Shoppes(Ohio) Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988); and In re Martin’s Famous Pastry Shoppe, Inc.,748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984).
Decision: The refusal to register is affirmed.
[fn1] Ser. No. 77635535, filed on December 17, 2008. The application is based on applicant’s asserted bona fide intent to use the mark in commerce. Trademark Act Section 1(b),15 U.S.C. ? 1051(b). The application includes the following “Description of Mark” statement: “The mark consists of a sitting dog and a sitting cat above the words PET PASSION in stylized letters. A small heart appears between the dog and the cat.” The application also states that “Color is not claimed as a feature of the mark.” [fn2] Reg. No. 2656827, issued on December 3, 2002. Section 8 affidavit accepted; Section 15 affidavit acknowledged. The registration includes a statement that “The stippling shown in the drawing is a feature of the mark.” [fn3] Although (as applicant notes) the word PET is disclaimed in each mark, it cannot be disregarded in our determination of the mark’s commercial impression. See In reNational Data Corp., supra, 224 USPQ 749, 751. This is especially so given its essential contribution to the alliterative effect and nature of the composite phrase PET PASSION. [fn4] Cf. The Aluminum Air Mfg. Co. v. Trim-SetCorporation, 100 USPQ 52, 53 (CCPA 1953) (finding that, in a composite mark consisting of the prominently-displayed words TRIM-A-SEAL and the smaller tag-line MAKES THE WEATHER BEHAVE, it is TRIM-A-SEAL that dominates the commercial impression of the mark.